PMÖD puts an end to the 3D trademark registration of "Foppatoffeln"
On December 2, 2020, an interlocutory decision was handed down in the Patent and Market Court of Appeal (PMÖD) in Sweden in the high profiled case between Crocs Inc. (Crocs) and ÖoB Aktiebolag (ÖoB) (PMT 7014-19). The decision concerns the cancellation of Crocs’ three-dimensional trademark registration (3D) (see below) and is part of a larger trademark infringement case where Crocs sued ÖoB for infringement of the Crocs’ 3D trademark registration for the well-known "Foppatoffeln".
Crocs established itself on the Swedish market in 2005 through the sale of the "Foppatoffeln" and applied for its 3D mark in Sweden in 2008. When ÖoB in 2014 and 2015 sold two models of slippers (in Swedish “tofflor”) and called them "EVA-tofflor", Crocs considered that the “EVA-tofflor” constituted an infringement of Crocs’ trademark registration for the "Foppatoffeln". Crocs therefore sent a cease and desist letter to ÖoB in 2015 and later, the infringement case was also brought to court. ÖoB then decided to countersue Crocs in an attempt to cancel Crocs' 3D trademark registration. Before the infringement case could be decided in PMÖD, the action for cancellation had to be decided in an interlocutory decision, which was announced last week.
In the case, PMÖD examined whether there was a basis for cancellation of Crocs’ 3D trademark registration, in accordance with ch. 3 § 1 of the Trademarks Act (in Swedish “varumärkeslagen”) and divided the examination into three parts;
1. Is there any obstacle to registration with regard to the shape of the trademark compared to the nature of the product and the technical aspects, or does the registration give a significant value to the product, according to ch. 2 § 4 of the Trademarks Act?
2. If not, is there a lack of distinctiveness in the mark, i.e. the trademark does not differ sufficiently from other slippers on the market, which would stand as an obstacle to registration according to ch. 2 § 5 of the Trademarks Act?
3. If not, has Crocs acted in a commercial manner which could be considered as passive or similar which could lead to the dilution of the mark and should instead be regarded as a form available to everyone and thus cancelled for that reason?
PMÖD dealt with question 1 on obstacles for registration and clarified that the case law of the European Court of Justice shows that the purpose of shapes in 3D trademark registrations should not be protected under trademark law to achieve a better protection in time compared to other intellectual property rights, such as technical solutions, which are protected 20 years according to patent law. There is also a limitation on the possibility of registration of all types of shapes, a so-called need of freehold for everyone to use. When assessing what the essential features of the mark are in its graphic representation in the registration certificate, it is necessary to assess if the shape follows the nature of the product by objectively looking at the overall impression of the product, the slipper in this case, or its various components or parts, which is decided on a case-by-case basis.
PMÖD came to the conclusion that both the heel strap and the holes on the top and on the sides are the essential features of the "Foppatoffeln" and the important parts of the mark, which must be assessed to see if they follow the nature of the product. PMÖD concluded that there is no obstacle to registration because there are many design variants of this type of product and the shape is also not necessary to achieve a specific technical solution. The Court decided that there was no reason for cancellation on this ground.
PMÖD then looked at question 2 regarding whether a cancellation could take place due to a lack of distinctiveness which was achieved before the application for cancellation was filed. PMÖD tested the distinctiveness in two parts; an inherent distinctiveness or an acquired distinctiveness. Would a normal, reasonably attentive and enlightened average consumer already at the time of applying for the mark in 2008 be able to distinguish that "Foppatoffeln" comes from Crocs or a certain company by looking at its shape? Does the shape differ significantly enough from what is common in the industry that one can relate the shape to the company behind the product in an overall assessment, so that the mark should be considered to have an inherent distinctiveness? Or has the brand acquired the corresponding distinctiveness through extensive use, for example through a single supplier in the market and that a larger part of the buyers (sales circle) associate the shape of the slipper as in the 3D mark to Crocs independently, without combining the name or logo on the product to the shape?
In an overall assessment, PMÖD did not consider that Crocs had been able to prove that "Foppatoffeln" had neither inherent distinctiveness nor acquired distinctiveness, despite its great sales success and media attention, as commercial success is not considered sufficient. Nor did the shape differ sufficiently from other slippers in a significant way. Nor had Crocs been able to show that marketing the slipper led to the shape itself being perceived as a trademark but marketed in combination with the name "Crocs" and/or the Crocs logo in the form of a crocodile, which is the way consumers most often pay attention to these types of goods.
PMÖD thus came to the conclusion in its assessment that the 3D trademark registration of "Foppatoffeln" should be cancelled because it lacked distinctiveness, and question 3 on dilution did not need to be assessed.
The judgement on cancellation thus affects the decision in the infringement case because the registration will be cancelled and thus the infringement case might also lead to the same verdict as in the previous instance, where the infringement case was rejected. However, there is yet no set date for when the infringement case may be decided.
The history of the "Foppatoffeln" as a 3D trademark can be concluded, and we can already state that there is still a relatively advanced, comprehensive and strict examination of 3D trademark registrations according to both EU practice and Swedish practice, which has also been proven before in cases such as for example Mag-Lite, C-136/02, Specsavers, C-252/12 and more. The ruling in the present case and circumstances can now be concluded as to that the shape of “Foppatoffeln” is now free to use. The court has clarified that the possibility of appeal is closed in PMÖD as a main rule and so also in this case.
In order to harmonize the Member States' interpretations and assessments, the intellectual property authorities within the European network of trademarks and designs issued a so-called “common communication” to all Member States earlier this year. The Communication concerns guidelines on how precisely the distinctive character of 3D marks should be tested and assessed in order to maintain legal certainty in those assessments, when the shape itself is not considered distinctive, by adding verbal and/or figurative elements, single color or color combinations and combinations of elements and by that achieving the distinctiveness of the mark. These guidelines and useful examples can provide good guidance for right holders in creating new 3D trademarks for strong and sustainable trademark registrations in the future.
Crocs three-dimensional trademark registration no. 400517 (Sweden).